Maslin v. Angel Eyes Produce Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Andy Eugene Maslin, Brooks Alan Washburn, Masbro LLC, and Waslin LLC (New York)
  • Defendant: James P. Massa (Kentucky); Sustainable Essentials Enterprises LLC (Delaware); Angel Eyes Produce, Inc. (New York)
  • Plaintiff’s Counsel: The Steele Law Firm, P.C.
• Case Identification: 8:18-cv-01309, N.D.N.Y., 11/07/2018
• Venue Allegations: Venue is alleged to be proper based on Defendant Angel Eyes Produce, Inc. being domiciled and having a regular and established place of business within the Northern District of New York.
• Core Dispute: Plaintiffs allege that Defendants Massa and Sustainable Essentials Enterprises LLC infringe a patent for a container-based plant growing apparatus, with the litigation being substantially shaped by a concurrent dispute over the patent's ownership and rightful control of the corporate entities involved.
• Technical Context: The technology relates to container-based horticulture systems that utilize a dual-media design to create separate wet and dry root zones, aiming to optimize plant growth.
• Key Procedural History: The complaint details a significant dispute over patent ownership, centering on two competing assignments: a "Purported Assignment" to Defendant Angel Eyes Produce, Inc. (AEP) in 2011, which Plaintiffs claim was fraudulently induced, and a subsequent "Waslin Assignment" to Plaintiff Waslin LLC in 2012. The validity of these assignments, and by extension, the rightful owner of the patent, is a threshold issue. The dispute is further complicated by allegations regarding the contested termination of Defendant Massa as CEO of AEP.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,112,936 - "Container-Based Plant Husbandry Apparatus and Controlled Horticultural Environment for Using Same"

• Patent Identification: U.S. Patent No. 8,112,936, "Container-Based Plant Husbandry Apparatus and Controlled Horticultural Environment for Using Same," Issued February 14, 2012 (’936 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section describes limitations in prior art container-based growing systems, where plant roots often become cramped in a compact ball of soil ("root bound"), and hydroponic systems, while providing nutrient-rich water, are not suitable for all types of plants. (’936 Patent, col. 2:13-30).
• The Patented Solution: The invention is a containerized growing system that uses two distinct layers of growing media to create a lower, liquid-saturated "wet zone" and an upper "dry zone." (’936 Patent, col. 4:3-7). Plant roots are initially established in the dry zone and grow downward to access the wet zone as needed, which the patent asserts creates a "self-regulating" system that combines the physical support of soil with the continuous nutrient availability of hydroculture. (’936 Patent, col. 5:14-25). Drains can be used to ensure the wet zone does not encroach upon the dry zone. (’936 Patent, col. 4:29-32).
• Technical Importance: This approach seeks to provide the "best of all possible worlds" by giving plants stable physical support in a soil-like medium while allowing their roots to access a continuous supply of water and nutrients, overcoming the "root bound" problem of traditional pots. (’936 Patent, col. 5:23-25).

Key Claims at a Glance

• The complaint does not specify which of the patent's 29 claims are asserted (Compl. ¶19). Independent claim 1 is representative of the apparatus.
• Independent Claim 1 (Apparatus):
  • a) a liquid-tight container having a bottom surface and a plurality of upstanding walls extending substantially perpendicularly therefrom;
  • b) a first growing media forming a first layer having a first thickness disposed adjacent and substantially parallel to said bottom surface and defining a lower, wet zone;
  • c) a second growing media forming a second layer having a second thickness disposed adjacent an upper surface of and substantially parallel to said first layer and defining an upper, dry zone;
  • d) means for regulating the level of a liquid in said liquid-tight container;
  • e) a liquid commingled with said first growing media and having a depth substantially equal to said first thickness; whereby said second layer comprising said second growing media is supported upon said first layer comprising said first growing media and said liquid commingled therewith.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused instrumentalities as the "apparatus and processes as identified in the Patent" that have been made, used, offered for sale, or sold by Defendants Massa and SEE. (Compl. ¶¶68, 78, 81).

Functionality and Market Context

• The complaint alleges that the accused apparatus and processes are "identical to those developed by Maslin and Washburn" and that Defendant Massa "took control of the original apparatus." (Compl. ¶86). It is alleged that Defendant Massa has "grown and sold produce using the existing apparatus and processes" and has also offered to sell, assign, or license the patent and technology to SEE and other entities. (Compl. ¶¶67, 79).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not contain a claim chart. The following table summarizes the infringement theory based on the complaint's allegation that the accused apparatus is "identical" to the patented invention.

’936 Patent Infringement Allegations

• Identified Points of Contention:
  • Ownership and Standing: The principal point of contention presented in the complaint is not a technical dispute over infringement, but the legal question of patent ownership. The infringement claim is predicated on Plaintiffs first proving that the "Purported Assignment" to AEP is invalid and that they, via the "Waslin Assignment," are the rightful owners with standing to sue. (Compl. ¶¶60-61, 73).
  • Technical Questions: A key technical question for the court, assuming standing is established, will be factual proof of infringement. The complaint’s assertion that the accused apparatus is "identical" to the patented invention (Compl. ¶86) is a legal conclusion that will require evidentiary support, such as product testing or reverse engineering, to demonstrate that every element of an asserted claim is met by the accused product's structure and operation.

V. Key Claim Terms for Construction

The complaint does not raise specific claim construction issues. However, the following terms from the asserted independent claim may be central to a future dispute.

• The Term: "means for regulating the level of a liquid"

  • Context and Importance: This term, appearing in claim 1(d), is in means-plus-function format under 35 U.S.C. § 112(f). Its scope is not the literal meaning of the words but is limited to the corresponding structure disclosed in the patent's specification and its equivalents. Practitioners may focus on this term because infringement will hinge on whether the accused device contains the specific structures disclosed, or their legal equivalents.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses that "level sensitive pumps or other such mechanisms may be used to maintain a liquid in lower wet zone 106 at a desired level," which may support a broader range of structures being considered equivalents. (’936 Patent, col. 4:42-44).
    • Evidence for a Narrower Interpretation: The primary structure disclosed for performing this function is one or more "drains 114," which "prevent the liquid... from encroaching or leaching into upper, dry zone 104." (’936 Patent, col. 4:29-32). An accused infringer might argue that its mechanism is not a structural equivalent to a simple drain.

• The Term: "growing media"

  • Context and Importance: This term is used to describe the material in both the "wet zone" (first media) and "dry zone" (second media). The definition of this term will determine the range of materials that could be found in an infringing product.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides extensive, non-limiting lists of potential materials. For the first media, it includes "hay or straw... washed rock or gravel, pine bark nuggets, aquarium rock, leaves, and the like." (’936 Patent, col. 4:7-12). For the second media, it lists "sterile dirt or another similar growing media such as lava rock or perlite." (’936 Patent, col. 4:21-22). This variety suggests the term should be construed broadly to cover a wide array of suitable materials.
    • Evidence for a Narrower Interpretation: A party could argue that the function of the media (e.g., providing "sufficient structural support" for the first media) implicitly limits the term to materials possessing that specific characteristic, potentially excluding other materials. (’936 Patent, col. 4:50-51).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant Massa "actively induced the infringement" by, among other things, inducing AEP and SEE to make, use, or sell the invention and by procuring the allegedly fraudulent "Purported Assignment" to "color the use... with legitimacy." (Compl. ¶¶69, 84, 85).
• Willful Infringement: Willfulness is alleged based on Defendants' purported pre-suit knowledge of the patent and their infringement. The complaint alleges that Plaintiffs provided "repeated notices" of infringement as early as July 2011 and that Defendants' conduct demonstrated an "objectively high likelihood" of infringement that was "so obvious that Massa and SEE knew or should have known it." (Compl. ¶¶76-77, 93).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of ownership and standing: before any technical analysis of infringement can be reached, the court must first determine the rightful owner of the ’936 Patent by resolving the validity of the competing "Purported Assignment" and "Waslin Assignment." The outcome of this corporate and contractual dispute is a prerequisite to the patent infringement claim.
• A key evidentiary question will be one of infringement proof: assuming Plaintiffs establish standing, they must then move beyond the complaint’s conclusory allegation that the accused products are "identical" to the invention. The case will likely turn on whether Plaintiffs can produce specific factual evidence demonstrating that the accused apparatus and methods meet each and every limitation of the asserted patent claims.